`571-272-7822
`
`
`Paper 38
`Entered: July 22, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00071
`Patent 6,218,930
`____________
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A conference call in the above proceeding was held on July 19, 2013
`
`between Judges Lee, Chang, and Arbes and respective counsel for Petitioner
`
`and Patent Owner. The call was initiated by Patent Owner to discuss a
`
`contingent motion to amend claims.
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`Patent Owner indicated that in its motion to amend it may propose
`
`new claims 10 and 11, with both claims contingent on independent claim 6
`
`being determined unpatentable. Claim 10 would include all of the
`
`limitations of independent claim 6 and add a new limitation that Patent
`
`Owner believes distinguishes over the prior art. Claim 11 would depend
`
`from claim 10 and add the limitations of current claim 9. The Board
`
`explained that in this circumstance, claims 10 and 11 both would be
`
`considered substitutes for claim 6 because they contain all of the limitations
`
`of claim 6 and the only other challenged claim, claim 9, is being left
`
`unchanged. The presumption, however, is that “only one substitute claim
`
`would be needed to replace each challenged claim.” 37 C.F.R.
`
`§ 42.121(a)(3). Thus, as discussed during the call, Patent Owner would need
`
`to demonstrate a special circumstance for replacing challenged claim 6 with
`
`more than one claim. See IPR2012-00027, Paper 26 at 4-6. Patent Owner
`
`also would need to show a patentable distinction of additional claim 11 over
`
`claim 10, otherwise a special circumstance justifying more than one
`
`additional claim likely does not exist. See id. at 8-10.
`
`Patent Owner further should explain in its motion why the new claims
`
`are patentable over not just the prior art of record, but also prior art not of
`
`record but known to Patent Owner. See id. at 7. This includes addressing
`
`the basic knowledge and skill set possessed by a person of ordinary skill in
`
`the art even without reliance on any particular item of prior art. To
`
`illustrate, if a feature Z is proposed to be added to a claim to render it
`
`patentably distinct from the prior art, it would be essential for Patent Owner
`
`to establish the significance of feature Z from the perspective of the level of
`
`ordinary skill in the art. It is of little value only to state that no prior art
`
`
`
`2
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`teaches or suggests multiple claim elements including feature Z. Such a
`
`statement masks the specific issue concerning the significance of feature Z
`
`from the perspective of a person of ordinary skill in the art.
`
`Instead, it would be helpful for Patent Owner to focus first on
`
`feature Z and indicate whether feature Z was known in any context, and if
`
`so, then explain why that context is so remote or different from that of the
`
`claimed invention that one with ordinary skill in the art would not have
`
`applied that teaching to arrive at the claimed invention. Similarly, it would
`
`be helpful to know why one with ordinary skill in the art would not have
`
`adapted relevant basic or general techniques taught in textbooks in the field
`
`of the invention to the particular use required by the claimed invention.
`
`The Board also alerted the parties during the call that the due dates in
`
`the Scheduling Order would be extended by two weeks so that the Board
`
`may consider the joinder issues presented in Cases IPR2013-00385 and
`
`IPR2013-00386.
`
`In consideration of the foregoing, it is hereby ORDERED that Patent
`
`Owner has met the requirement to confer with the Board prior to filing a
`
`motion to amend claims under 37 C.F.R. § 42.121(a).
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`PETITIONER:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`JSanok@Crowell.com
`JLindsay@Crowell.com
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL & ROONEY P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
`
`
`4
`
`
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